Delhi District Court
Having Its Registered Office At vs Owner/Proprietor on 15 January, 2019
IN THE COURT OF SH. RAMESH KUMARII
ADDITIONAL DISTRICT JUDGE (CENTRAL)01
TIS HAZARI COURTS, DELHI
TM1075/2016
Shriram Pistons and Rings Limited
A Company registered under the provisions of
Companies Act, 1956
Having its Registered Office at
3rd Floor, Himalaya House,
23, Kasturba Gandhi Marg,
New Delhi110001.
Through Mr. Vijay Singh Rana,
Authorized Representative
..............Plaintiff
Versus
Owner/Proprietor,
Building No. 1528, Gali No.27,
Naiwala, Karol Bagh,
New Delhi110005.
..........Defendant
Date of institution of the suit : 15.03.2016
Date of reserving the judgment : 11.12.2018
Date of pronouncement of judgment : 15.01.2019
JUDGMENT
1 Vide this judgment, I shall dispose off the suit of the plaintiff for permanent and mandatory injunction, infringement of registered trademark, infringement of copyright, passing off and damages.
TM 1075/16 M/s. Shriram Pistons And Rings Ltd. Vs. Owner/proprietor 1/8 2 Brief facts as stated by the plaintiff in the present suit are that plaintiff, a company registered under the provisions of Companies Act having its registered office at 3rd Floor, Himalaya House, 23, Kasturba Gandhi Marg, New Delhi01 has filed the present suit for mandatory and permanent injunction, infringement of trademark and copyright, passing off and rendition of accounts through its authorised representative Sh. Vijay Singh Rana. The plaintiff company has been dealing with engine components such as engine valves, piston pins, piston rings and circlips since the year 1972 and engine valves and engine components since 1993 establishing its own position name and exclusivity. The plaintiff company trademark "USHA" and "SHRIRAM" is registered under the trademarks no. 308516, 309086, 309092, 310046, 312962, 316156, 426689 and 426693 is still valid, subsisting and in full force and has been renewed from time to time and no individual or any business entity is entitled to use this said trademarks and/or any deceptively or confusingly similar marks without consent or any written commission of the plaintiff company. It is the case of the plaintiff that it is also owner of several registered trademarks outside India and has its registered trademarks in Afghanistan, Bangladesh, Colombia, Check Republic, Italy, Kuwait, Malaysia, Poland, Saudi Arabia, UAE, UK and Sri Lanka etc. under various classes. It is further averred that the goods of the plaintiff company with the trademark "USHA" and "SHRIRAM" and its unique design effect, sign, graphics and style is associated with the goods of the plaintiff company only. The excellent reputation and goodwill has thus TM 1075/16 M/s. Shriram Pistons And Rings Ltd. Vs. Owner/proprietor 2/8 been acquired by the plaintiff among the users, customers of its product due to strict quality control. It is further averred that recently in the second week of February, 2016 it has come to the knowledge of the plaintiff that the defendant is engaged in stocking, distributing and or otherwise dealing in engine valves, pistons, piston rings, piston pin, packaging material bearing the trademark "USHA", "SHRIRAM" and/or deceptively and confusingly similar to the trademark "USHA" and "SHRIRAM" of the plaintiff company and is causing confusion and deception amongst the unwary purchasing public trade. It is further stated that the defendant is using identical trademark/trade dress/packaging/copyright to that of the plaintiff's products without obtaining permission from the plaintiff's company. The Plaintiff Company thereafter conducted an investigation at the premises of the Defendant situated at Building No. 1528, Gali No. 27, Naiwala, Karol Bagh, Delhi110005 and also godown at Building No. 1528, Gali No. 27, Naiwala, Karol Bagh, Delhi110005 and found that the Defendant is clandestinely stocking, distributing and is illegally selling the products bearing the registered trademark "USHA" and "SHRIRAM" and its logos deceptively similar trademarks which are much inferior in quality than the products of the Plaintiff Company in Delhi. It is further stated that thereafter, the Plaintiff Company has filed the present suit against the Defendant praying for grant of an order for mandatory and permanent injunction thereby restraining the Defendant, its associates and agents, directors, officers, employees, distributors, franchisee, representatives TM 1075/16 M/s. Shriram Pistons And Rings Ltd. Vs. Owner/proprietor 3/8 and assigns from using the trademarks "USHA" and "SHRIRAM" and its logos in any form and manner. The Plaintiff Company has also sought damages for infringement of trademarks and passing off the business and product of the Defendant in the name of the Plaintiff Company and has sought the rendering of accounts of the profits made by the Defendant, along with punitive damages.
3 It is a matter of record that the plaintiff company had also moved applications under order XXXIX rule 1 and 2 CPC read with section 135 of the Trademarks Act, 1999 seeking temporary injunction against the defendant and under order XXVI Rule 9 of The Code of Civil Procedure, 1908 for the appointment of a Local Commissioner to visit the premises of the Defendant and seize the infringing goods lying at the premises of the Defendant, which applications were allowed vide order dated 18.03.2016 thereby restraining the defendant from using the trademark/trade dress "USHA" and "SHRIRAM" of the plaintiff in any form and manner and pursuant to the order of this court dated 18.03.2016, on 19.03.2016 the Local commissioner visited the premises of the Defendant situated at Building No. 1528, Gali No. 27, Naiwala, Karol Bagh, Delhi110005 and also godown at Building No. 1528, Gali No. 27, Naiwala, Karol Bagh, Delhi110005 and filed his report on record.
4 Thereafter, summons of the said suit was issued to the defendant but since defendant did not file written statement, his defence was struck off video rder dated 17.10.2016. Thereafter, matter was fixed for plaintiff TM 1075/16 M/s. Shriram Pistons And Rings Ltd. Vs. Owner/proprietor 4/8 evidence. The plaintiff has examined one witness i.e. Sh. Vijay Singh Rana, Authorised Representative of the plaintiff company as PW1 and relied upon the following documents:
i. Certificate of Incorporation of the Plaintiff Company as Ex.PW1/1; ii. Power of Attorney dated 01.07.2015 in favour of Mr. Vijay Singh Rana as Ex.PW1/2;
iii. Board of Resolution dated 26.06.2015 as Ex.PW1/3; iv. Legal proceeding of "USHA" wordmark/device/logo bearing Trademark No's. 308516, 426689, 3039086, 309092, 310046, 603868, 426693, 316156 and 312962 as Ex.PW1/4.
v. Copyright Registrations bearing No. A14418/75, A14419/75 and A 14620/75 in favour of Plaintiff Company as Ex. PW1/5 (colly.); vi. Legal proceeding of "SHRIRAM" wordmark/device/logo bearing Trademark No's. 426691, 426692, 552652, 526920 and 552653 as Ex.PW1/6 (colly.);
vii. Copy of the Annual reports from 2001 to 2016 as Ex.PW1/7; viii. Photographs of the original products of the Plaintiff Company as Ex.PW1/8;
ix. Photographs of counterfeit products procured from the Defendant bearing marks deceptively and confusingly similar to the trademark "USHA" and "SHRIRAM" as Ex.PW1/9; and x. Affidavit of investigator as Ex.PW1/10.
5 The plaintiff did not examine any other witness and closed its evidence on 24.02.2018 and thereafter, matter was fixed for final TM 1075/16 M/s. Shriram Pistons And Rings Ltd. Vs. Owner/proprietor 5/8 arguments.
6 Ld. counsel for plaintiff has filed written arguments. I have heard the arguments and perused the record.
7 Report of the Ld. Local Commissioner perused. On perusal of the same, it is revealed that on 19.03.2016 the Local commissioner visited the premises of the defendant situated at Building No. 1528, Gali No. 27, Naiwala, Karol Bagh, Delhi110005 and also godown at Building No. 1528, Gali No. 27, Naiwala, Karol Bagh, Delhi110005, where the defendant was caught red handed being in possession of counterfeit products bearing registered trademarks of the Plaintiff Company. Ld. Local Commissioner served the notice of the commission to Mr. Ajay Chawla, who was present in the shop and claimed himself to be the owner of the shop at the time of the Commission. Ld. Local Commissioner seized and sealed the counterfeit goods bearing the trademark "USHA" and "SHRIRAM" and its logos in a gunny bag which included, 950 USHA Engine Valves wrapper, 31,500 Hologram stickers, 40 Mater Box (USHA) engine valves, 38 sets of Packed Valves USHA engine Valves, 160 Transparent USHA packaging and 51 sets of Engine valve set (Packed). The seized goods were released to the defendant on superdari. The defendant has, thus, caused the plaintiff company substantial loss and damage on account of continuous infringement of its copyright and trademarks. Even otherwise, the testimony of PW1 remained unrebutted and unchallenged in absence of any cross examination by the defendant and there is no reason to TM 1075/16 M/s. Shriram Pistons And Rings Ltd. Vs. Owner/proprietor 6/8 disbelieve the same. Therefore, the unrebutted testimony of the PW1 proves the case of the plaintiff company on the scales of preponderance of probabilities. Therefore, in these circumstances, the suit of the plaintiff is decreed as under:
1. Decree of mandatory and permanent injunction is passed in favour of the plaintiff and against the defendant thereby restraining the defendant, his associates, agents, officers, employees, distributors, franchisee, representatives and assigns from using any identical and/or a trade name deceptively and confusingly similar to the trademarks, trade dress, copyright, words and logos "USHA" and "SHRIRAM" of the plaintiff company on the packaging of engine valves, pistons, piston pins, piston rings, packaging material bearing trademark "USHA", "SHRIRAM" and other engine components manufactured and marketed by the plaintiff in the name of "USHA" and "SHRIRAM";
2. Decree of mandatory and permanent injunction is also passed in favour of the plaintiff and against the defendant thereby restraining the defendant, his associates, agents, officers, employees, distributors, franchisee, representatives and assigns from passing off their goods as that of the plaintiff's goods;
3. Decree is also passed in favour of the plaintiff and against the defendant for deliveryup of all the impugned finished and unfinished materials bearing the impugned and violative trademark/label or any other deceptively similar trademark/label including its blocks, labels, display boards, sign board, trade literatures and goods etc. to the plaintiff for the purpose of destruction and erasure;
TM 1075/16 M/s. Shriram Pistons And Rings Ltd. Vs. Owner/proprietor 7/8
4. Decree is also passed in favour of the plaintiff and against the defendant in sum of Rs.2,00,000/ (Rupees Two Lacs Only) as damages on account of loss of business opportunity by selling of counterfeit goods, payable by the defendant to the plaintiff.
5. Costs of the suit is also awarded in favour of the plaintiff. 8 Decree sheet be prepared accordingly. File be consigned to record room.
Announced in the open court on 15th, January, 2019 (RAMESH KUMARII) ADDITIONAL DISTRICT JUDGE01(CENTRAL) TIS HAZARI COURTS, DELHI Digitally signed by RAMESH RAMESH KUMAR KUMAR Date:
2019.01.16 14:22:23 +0500 TM 1075/16 M/s. Shriram Pistons And Rings Ltd. Vs. Owner/proprietor 8/8